Tuesday, December 30, 2008
USPTO 101 guidelines
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_101_05_15_2008.pdf
Office claims only "functional descriptive material."
Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:
The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.
Possible reply 1:I would then change preamble to recite A method carried out by a digital computer and comprising: selecting ..., storing, transmitting ...
I would then point out that Benson recognized a "digital" computer as being a particular machine distinct from an analog computer and that this claim does not preempt the public from wholly practicing a fundamental principle with machines other than digital or from practicing manually. I would ask the examiner to particularly point out that which he regards as the fundamental principle and explain why this is so.
Possible reply 2:Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.
The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.
Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.
Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.
We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.
As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.
from patenthawk
The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.
Possible reply 1:I would then change preamble to recite A method carried out by a digital computer and comprising: selecting ..., storing, transmitting ...
I would then point out that Benson recognized a "digital" computer as being a particular machine distinct from an analog computer and that this claim does not preempt the public from wholly practicing a fundamental principle with machines other than digital or from practicing manually. I would ask the examiner to particularly point out that which he regards as the fundamental principle and explain why this is so.
Possible reply 2:Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.
The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.
Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.
Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.
We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.
As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.
from patenthawk
Bilski Examples -- USPTO Rules
In the patent claims consider using the phrase “one or more computer processors.”
In the first patent claim consider also using the phrase “transforming data X into data Y.”
Limitations Summary
• If It Can Be Tied To A Machine, Use A
Component Of The Machine In Each Step
• If It Represents A Physical Object, Display It
• If It Cannot Be Tied To A Machine And Does
Not Represent A Physical Object, Use Software
Modules From here. Look at this.
Preambles:
(not allowed) Gutta - A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:
(ALLOWED) Bo Li - A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising
(not allowed) Cornea-Hasegan - A computer readable media including program instructions which when executed by a processor cause the processor to perform the following:
Suggested examples:
Barnes Claim 1 Tied To A Machine
• Claim 1. A fault identification method that
comprises:
• obtaining seismic data using a seismic detector;
• recording the seismic data on a record medium;reading the seismic data from the record medium
using a computer; and
• for each of multiple positions of an analysis
window in the seismic data, determining a
planarity value for discontinuities in the analysis
window using the computer.
Barnes Claim 32 (In Indep. Form)
Representing A Physical Object
• Claim 32. A fault identification method that
comprises:
• determining discontinuity values from seismic
data;
• applying principal component analysis to the
discontinuity values to identify faults that
represent rock layer features associated with
hydrocarbons; and
• displaying the identified faults in a vertical slice
view to allow a user to specify subregions of the
seismic data for examination.
Comiskey Claim 17 As A Method Claim
• A method for mandatory arbitration resolution regarding one
or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable
medium, , wherein the distinct software modules comprise a
registration module, an arbitration module, an arbitration
resolution module, and an arbitrator database access module;
• enrolling a person who is executing and one or more
unilateral documents associated with the person in a
mandatory arbitration system at a time prior to or as of the
time of creation of or execution of the one or more unilateral
documents using the registration module; …
• A computer program product, comprising a computer usable
medium having a computer readable program code embodied
therein, said computer readable program code adapted to be
executed to implement a method for mandatory arbitration
resolution regarding one or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable medium, ,
wherein the distinct software modules comprise a registration
module, an arbitration module, an arbitration resolution module,
and an arbitrator database access module;
• enrolling a person who is executing and one or more unilateral
documents associated with the person in a mandatory arbitration
system at a time prior to or as of the time of creation of or
execution of the one or more unilateral documents using the
registration module; …
Suggestion--tie each step into the computer.
From in re Gutta, commentary
("wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature" -- look, the method is tied to a particular machine!!). Suggestion
Rejected in re Gutta claim
The BPAI said that the displaying step could be performed by a human writing down the answer on a piece of paper, so tie the dispaying directly into the processor, or something.
http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf
Bilski USPTO rules link
From the Rules:
In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008).
Rule???? Under Bilski, the patentability test has a very context-sensitive angle in order to conclude whether a step is integral to the invention or if it is extra-solution.
Suggested by a commentor at Patent Hawk:
Claims, below, invalid under 101 re Bilski.
1. A method for optimizing a query in a relational database management system, the method comprising:
evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.
Suggestion 1: add "said method being implemented by a digital machine and comprising:" the reasoning being that a "digital machine" is a "particular machine."
Suggestion is to reformulate as follows:
1. A method for optimizing a query for a relational database management system, the method comprising:
receiving the query in a computer system implementing an optimization algorithm, the optimization algorithm:
evaluating the query to determine: whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on: (i) evaluation of the query, and (ii) determination of whether the first row set is subsumed by the second row set.
Fed. Circuit case law that may come in hand
(1) For a machine implementation, that issue was not decided by the CAFC; and
(2) For a transformation, it must be central to the purpose of the claimed process and the electronic transformation of the data itself into a visual depiction was sufficient in Abele.
Fundamentally, one can maybe look to the EP's handling of software claims related to "technical effect" that goes beyond the normal physical interactions between the program and the computer, as a guide. See, http://www.epo.org/patents/law/legal-texts/html/guiex/e/c_iv_2_3_6.htm
Maybe?
(from patentlyo comments - Jim)
Claim 1 recited
(GL- not 101 patentable subject matter) 1. A computerized method comprising:
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.
According to the BPAI,
[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.
However, a related apparatus claim recited
(gl-patentable subject matter) 25. An apparatus comprising:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.
Here, the BPAI found the language rendered statutory subject matter into the claim:
Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.
Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.
From BPAI opinion here. Application here.
In the first patent claim consider also using the phrase “transforming data X into data Y.”
Limitations Summary
• If It Can Be Tied To A Machine, Use A
Component Of The Machine In Each Step
• If It Represents A Physical Object, Display It
• If It Cannot Be Tied To A Machine And Does
Not Represent A Physical Object, Use Software
Modules From here. Look at this.
Preambles:
(not allowed) Gutta - A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:
(ALLOWED) Bo Li - A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising
(not allowed) Cornea-Hasegan - A computer readable media including program instructions which when executed by a processor cause the processor to perform the following:
Suggested examples:
Barnes Claim 1 Tied To A Machine
• Claim 1. A fault identification method that
comprises:
• obtaining seismic data using a seismic detector;
• recording the seismic data on a record medium;reading the seismic data from the record medium
using a computer; and
• for each of multiple positions of an analysis
window in the seismic data, determining a
planarity value for discontinuities in the analysis
window using the computer.
Barnes Claim 32 (In Indep. Form)
Representing A Physical Object
• Claim 32. A fault identification method that
comprises:
• determining discontinuity values from seismic
data;
• applying principal component analysis to the
discontinuity values to identify faults that
represent rock layer features associated with
hydrocarbons; and
• displaying the identified faults in a vertical slice
view to allow a user to specify subregions of the
seismic data for examination.
Comiskey Claim 17 As A Method Claim
• A method for mandatory arbitration resolution regarding one
or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable
medium, , wherein the distinct software modules comprise a
registration module, an arbitration module, an arbitration
resolution module, and an arbitrator database access module;
• enrolling a person who is executing and one or more
unilateral documents associated with the person in a
mandatory arbitration system at a time prior to or as of the
time of creation of or execution of the one or more unilateral
documents using the registration module; …
• A computer program product, comprising a computer usable
medium having a computer readable program code embodied
therein, said computer readable program code adapted to be
executed to implement a method for mandatory arbitration
resolution regarding one or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable medium, ,
wherein the distinct software modules comprise a registration
module, an arbitration module, an arbitration resolution module,
and an arbitrator database access module;
• enrolling a person who is executing and one or more unilateral
documents associated with the person in a mandatory arbitration
system at a time prior to or as of the time of creation of or
execution of the one or more unilateral documents using the
registration module; …
Suggestion--tie each step into the computer.
From in re Gutta, commentary
"Here is one interesting part of the decision, however: "Regarding claim 1, the step of “displaying” need not be performed by
any particular structure. It may be accomplished simply by writing the
resulting score on a piece of paper. A conclusion that such post-solution
activity is sufficient to impart patentability to a claim involving the solving
of a mathematical algorithm would exalt form over substance."
("wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature" -- look, the method is tied to a particular machine!!). Suggestion
Rejected in re Gutta claim
1. A computerized method performed by a data processor for
recommending one or more available items to a target user,
comprising the steps of:
obtaining a history of selecting one or more available items by
at least one third party;
partitioning a third party selection history into a plurality of
clusters, wherein each cluster contains items that are closer to
the mean of the cluster than any other cluster from among the
plurality of clusters,
modifying a target user's history of selecting said one or more
available items with one or more third party clusters to produce
a modified target user's history;
processing the modified target user's history to generate a target
user profile, wherein the modified target user's history
characterizes preferences of the target user as modified to
reflect preferences of the third party;
generating a recommendation score for at least one of said
available items based on said target user's profile; and
displaying the recommendation score to the target user.
The BPAI said that the displaying step could be performed by a human writing down the answer on a piece of paper, so tie the dispaying directly into the processor, or something.
http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf
Bilski USPTO rules link
From the Rules:
There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.
The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson . . . the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.
In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008).
Rule???? Under Bilski, the patentability test has a very context-sensitive angle in order to conclude whether a step is integral to the invention or if it is extra-solution.
Suggested by a commentor at Patent Hawk:
Claims, below, invalid under 101 re Bilski.
1. A method for optimizing a query in a relational database management system, the method comprising:
evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.
Suggestion 1: add "said method being implemented by a digital machine and comprising:" the reasoning being that a "digital machine" is a "particular machine."
Suggestion is to reformulate as follows:
1. A method for optimizing a query for a relational database management system, the method comprising:
receiving the query in a computer system implementing an optimization algorithm, the optimization algorithm:
evaluating the query to determine: whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on: (i) evaluation of the query, and (ii) determination of whether the first row set is subsumed by the second row set.
Fed. Circuit case law that may come in hand
There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. . . . To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. Bernhart, 417 F.2d at 1400.
(1) For a machine implementation, that issue was not decided by the CAFC; and
(2) For a transformation, it must be central to the purpose of the claimed process and the electronic transformation of the data itself into a visual depiction was sufficient in Abele.
Fundamentally, one can maybe look to the EP's handling of software claims related to "technical effect" that goes beyond the normal physical interactions between the program and the computer, as a guide. See, http://www.epo.org/patents/law/legal-texts/html/guiex/e/c_iv_2_3_6.htm
Maybe?
(from patentlyo comments - Jim)
Claim 1 recited
(GL- not 101 patentable subject matter) 1. A computerized method comprising:
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.
According to the BPAI,
[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.
However, a related apparatus claim recited
(gl-patentable subject matter) 25. An apparatus comprising:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.
Here, the BPAI found the language rendered statutory subject matter into the claim:
Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.
Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.
From BPAI opinion here. Application here.
Teaching Away--case law
"'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'" Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (refusing to conclude that prior art disclosure taught away from the claimed invention where the disclosure did not "criticize, discredit, or otherwise discourage the solution claimed").
Monday, December 29, 2008
Rule 105 requests -- IDS more information
1)Rule 105 request may be made for "Factual" information. Asking for any type of judgement on patentability is NOT allowed - an Examiner may ask for factual informtion concerning accuracy of the Examiner's interpretations or may ask stipulations as to facts with which the applicant MAY agree or disagree. Asking for the applicant to make interpretations is not appropriate.
2)Appropriate (and complete) responses to a Rule 105 request include "The information required to be submitted is unknown" as well as "The information required to be submitted is not readily available."
Rule 105 requests--requests for more information.
from http://www.patentlyo.com/patent/2008/11/responding-to-e.html#comments
2)Appropriate (and complete) responses to a Rule 105 request include "The information required to be submitted is unknown" as well as "The information required to be submitted is not readily available."
Rule 105 requests--requests for more information.
from http://www.patentlyo.com/patent/2008/11/responding-to-e.html#comments
Teaching away.
A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Analysis: The key is whether it would lead away because it wouldn't functionally work
Analysis: The key is whether it would lead away because it wouldn't functionally work
Monday, December 8, 2008
Title Objections
Objection to Title
The Examiner has asked that the title of the invention contain the word “Testing.” Applicant respectively disagrees with this objection. Applicant respectively disagrees with this objection. Nonetheless, Applicant has amended the title in an effort to expedite prosecution. Specifically, the title has now been amended to read “A B C” Applicant notes that the title in no way limits the scope of any given claim. Rather, the language of each of the respective claims speaks for itself. Applicant respectfully requests withdrawal of the objection to the title.
The Examiner has asked that the title of the invention contain the word “Testing.” Applicant respectively disagrees with this objection. Applicant respectively disagrees with this objection. Nonetheless, Applicant has amended the title in an effort to expedite prosecution. Specifically, the title has now been amended to read “A B C” Applicant notes that the title in no way limits the scope of any given claim. Rather, the language of each of the respective claims speaks for itself. Applicant respectfully requests withdrawal of the objection to the title.
Friday, December 5, 2008
Remarks Block
Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1, 3, 4, 6-10, 12-13, 15-17, and 20-25 are pending in the application. No claims have been allowed. Claims 1, 15, and 20 are independent. Claims 2, 5, 11, 14, 18, and 19 have been canceled without disclaimer and without prejudice to pursuing in a continuing application.
Wednesday, November 26, 2008
Dependent claims different art rejections.
For multiple claims
The Action asserts a rejection of claims 21-23 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Hegedus, and further in view of Hamynen. Applicants respectfully assert that Claims 21-23 and 26 recite novel and nonobvious features allowable over the proposed Hegedus - Hamynen combination. Further since claims 21-23 and 26 are dependent claims of allowable independent claim 1, they should also, therefore, be allowable for at least the reasons stated for claim 1. Claims 21-23 and 26 also present independently patentable combinations. Claims 21-23 and 26 should be allowable. Such action is respectfully requested.
For a single claim
The Office asserts a rejection of claim 19 as obvious over Herz, Yoshinobu, and Alexander, in view of Lazarus, and further in view of Daniels, U.S. Patent Publication No. 2002/0032907 (“Daniels”). Applicants respectfully assert that claim 19 recites novel and nonobvious features allowable over the proposed Herz-Yoshinobu-Alexander-Lazarus-Daniels combination. Further, since it depends from allowable claim 14, it should be allowed for at least the reasons stated for claim 14. Claim 19 should be allowable. Such action is respectfully requested.
The Action asserts a rejection of claims 21-23 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Hegedus, and further in view of Hamynen. Applicants respectfully assert that Claims 21-23 and 26 recite novel and nonobvious features allowable over the proposed Hegedus - Hamynen combination. Further since claims 21-23 and 26 are dependent claims of allowable independent claim 1, they should also, therefore, be allowable for at least the reasons stated for claim 1. Claims 21-23 and 26 also present independently patentable combinations. Claims 21-23 and 26 should be allowable. Such action is respectfully requested.
For a single claim
The Office asserts a rejection of claim 19 as obvious over Herz, Yoshinobu, and Alexander, in view of Lazarus, and further in view of Daniels, U.S. Patent Publication No. 2002/0032907 (“Daniels”). Applicants respectfully assert that claim 19 recites novel and nonobvious features allowable over the proposed Herz-Yoshinobu-Alexander-Lazarus-Daniels combination. Further, since it depends from allowable claim 14, it should be allowed for at least the reasons stated for claim 14. Claim 19 should be allowable. Such action is respectfully requested.
Pointing out added language to differentiate asserted art
Language when you wish to point out added language
Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.
Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.
Monday, November 17, 2008
Bilski-Bouregard claims
Ex Parte Bo Li (precedental) explicitly allows Bouregard claims under Bilski
Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”
from Ex Parte Bo Li
Allowed claim
42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.
Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”
from Ex Parte Bo Li
"It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101."
Allowed claim
42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.
101 case law for OA
Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).
Opinion is here
8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)
Thursday, November 13, 2008
Remarks block
Remarks block.
Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.
Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.
Wednesday, November 12, 2008
103 Header
Claim Rejections under 35 USC § 103
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]
Monday, November 10, 2008
Limitation Missed by Examiner
Neither Bischof nor Schumacher, either separately or in combination, teach or suggest, e.g., the claim 11 language: a module for verifying the set of tokens as internally consistent, the verifying comprising considering marking information added to the tokens. Applicant’s representative has carefully read the Office action and cannot locate a rejection of the above portion of the claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. For at least this reason, claim 18 is in condition for allowance.
Or
Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.
or
Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.
Or
Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.
or
Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.
Tuesday, October 7, 2008
CIP not prior art
The Cheung patent is a continuation-in-part with a filing date after the filing date of the instant application. The material in Cheung relied on in the rejection to allegedly reject the claims has a priority date after the filing date of the instant application.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.
Dependent claims with different reference asserted
Claim Rejections Under 35 USC § 103(a)
The Action rejects claims 6, 8, 10-13, 24, and 26 under 35 U.S.C § 103(a) as unpatentable over Fetzer in view of Rudys. Applicants respectfully assert that claims 6, 8, 10-13, 24, and 26 recite novel and nonobvious features allowable over the proposed Fetzer - Rudys combination. As understood by Applicants, Rudys fails to remedy the deficiencies of Fetzer. Further, since they depend from allowable claim 1 or allowable claim 18, they should be allowed for at least the reasons stated for claims 1 and 18. Claims 6, 8, 10-13, 24, and 26 should be allowable. Such action is respectfully requested.
The Action rejects claims 6, 8, 10-13, 24, and 26 under 35 U.S.C § 103(a) as unpatentable over Fetzer in view of Rudys. Applicants respectfully assert that claims 6, 8, 10-13, 24, and 26 recite novel and nonobvious features allowable over the proposed Fetzer - Rudys combination. As understood by Applicants, Rudys fails to remedy the deficiencies of Fetzer. Further, since they depend from allowable claim 1 or allowable claim 18, they should be allowed for at least the reasons stated for claims 1 and 18. Claims 6, 8, 10-13, 24, and 26 should be allowable. Such action is respectfully requested.
Arguing against combinations--MPEP Aug 08 language
Horiguchi cannot be combined with Korn.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.
Thursday, September 25, 2008
Small Entity Rules
Brown & Michaels
Am I entitled to Small Entity fee status?
Many USPTO fees are discounted by 50% for applicants and patentees who qualify as "Small Entities". Determining whether or not you fit within the "Small Entity" class or not can be complicated. However, it is important to do it right, because the consequences of claiming Small Entity status when you are, in fact, a Large Entity, can be draconian - complete invalidity of a patent and loss of patent rights due to "fraud on the Patent Office".
Assuming you are entitled to it, you must make an assertion of your Small Entity status when you file the application. You do this either by checking the "Applicant claims small entity status" box on the transmittal form, or by paying the small entity fee exactly.
This is the last time you get to claim small entity status just by paying the right fee, though - if your status changes before you have to pay the issue fee (or one of the maintenance fees after issue) you must file a written assertion that you are now a Large Entity when you pay the fee. Merely paying the Large Entity fee will not correct your status. Similarly, if you filed your application as a Large Entity, and at the time of paying an issue or maintenance fee you are entitled to Small Entity status, you must file a written assertion of your new status.
Once you've established your Small Entity status when you file the application, you can continue to pay small entity fees until you (a) file a continuing application (continuation, division, CIP), or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee which is due after the patent issues. Before you take any of these actions, you need to make a new determination of your eligibility for small entity treatment. This is set forth in the Patent Rules at 37 CFR 1.27(f) and (g):
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. ...
(g)
(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
Note that the "Small Entity" or "Large Entity" status applies to the owner of the patent rights - not the inventor or inventors, who would always be individuals under US law. If the owner has granted patent rights to an entity which is not a Small Entity, then the owner cannot claim Small Entity status.
As stated in 35 U.S.C. 41(h)(1) and 37 CFR 1.27(a), an owner of a patent or patent application is entitled to Small Entity Status if and only if:
The owner is a "person" (i.e. individual or individuals) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.; or
The owner is a "small business concern", meaning a business which meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
Those standards (13 CFR 121.802) say that a concern eligible for reduced patent fees is one:
(a) Whose number of employees, including affiliates, does not exceed 500 persons; and
(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
The regulations of the SBA define how you count an "employee", what is an "affiliate", and over what period that counting is done. If you really want to find out exactly, you will need to review all of the regulations and your employment records very carefully, and account for all of the "employees" who worked for your business or its "affiliates" at any time during the previous 12 months. If your business concern (counting its parent company, subsidiary companies and any affiliated companies) was anywhere near 500 employees at any point, you should probably pay Large Entity fees, just to be safe.
Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416;
or
The owner is a nonprofit organization, meaning (37 CFR 1.27(a)(3)) any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201 (i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
What about rights held by Government Agencies?
Normally, transfer of any rights to an entity which does not qualify for Small Entity status means that Large Entity fees must be paid. Government agencies are not, themselves, Small Entities. The MPEP says so explicitly in section 509.02 - "Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules ... 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country".
There are certain exceptions to the general rule where some licenses to government agencies by those who themselves qualify as Small Entities will not preclude Small Entity treatment. Those exceptions deal with compulsory licenses granted the government under Executive Order 10096 (inventions by government employees) and 35 USC 202(c) (inventions by private contractors who make inventions while receiving Federal funding, where a license is required as a condition of financing).
If a Federal agency (or any other government body) is an owner of a patent or application (even a co-owner), rather than a licensee, the application/patent would NOT qualify for Small Entity fees.
For details on this, see MPEP 502.09, particularly section VI - RIGHTS HELD BY GOVERNMENT ORGANIZATIONS - http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_02.htm
From http://www.bpmlegal.com/howsmall.html
Am I entitled to Small Entity fee status?
Many USPTO fees are discounted by 50% for applicants and patentees who qualify as "Small Entities". Determining whether or not you fit within the "Small Entity" class or not can be complicated. However, it is important to do it right, because the consequences of claiming Small Entity status when you are, in fact, a Large Entity, can be draconian - complete invalidity of a patent and loss of patent rights due to "fraud on the Patent Office".
Assuming you are entitled to it, you must make an assertion of your Small Entity status when you file the application. You do this either by checking the "Applicant claims small entity status" box on the transmittal form, or by paying the small entity fee exactly.
This is the last time you get to claim small entity status just by paying the right fee, though - if your status changes before you have to pay the issue fee (or one of the maintenance fees after issue) you must file a written assertion that you are now a Large Entity when you pay the fee. Merely paying the Large Entity fee will not correct your status. Similarly, if you filed your application as a Large Entity, and at the time of paying an issue or maintenance fee you are entitled to Small Entity status, you must file a written assertion of your new status.
Once you've established your Small Entity status when you file the application, you can continue to pay small entity fees until you (a) file a continuing application (continuation, division, CIP), or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee which is due after the patent issues. Before you take any of these actions, you need to make a new determination of your eligibility for small entity treatment. This is set forth in the Patent Rules at 37 CFR 1.27(f) and (g):
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. ...
(g)
(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
Note that the "Small Entity" or "Large Entity" status applies to the owner of the patent rights - not the inventor or inventors, who would always be individuals under US law. If the owner has granted patent rights to an entity which is not a Small Entity, then the owner cannot claim Small Entity status.
As stated in 35 U.S.C. 41(h)(1) and 37 CFR 1.27(a), an owner of a patent or patent application is entitled to Small Entity Status if and only if:
The owner is a "person" (i.e. individual or individuals) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.; or
The owner is a "small business concern", meaning a business which meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
Those standards (13 CFR 121.802) say that a concern eligible for reduced patent fees is one:
(a) Whose number of employees, including affiliates, does not exceed 500 persons; and
(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
The regulations of the SBA define how you count an "employee", what is an "affiliate", and over what period that counting is done. If you really want to find out exactly, you will need to review all of the regulations and your employment records very carefully, and account for all of the "employees" who worked for your business or its "affiliates" at any time during the previous 12 months. If your business concern (counting its parent company, subsidiary companies and any affiliated companies) was anywhere near 500 employees at any point, you should probably pay Large Entity fees, just to be safe.
Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416;
or
The owner is a nonprofit organization, meaning (37 CFR 1.27(a)(3)) any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in any country;
(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201 (i)); or
(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
What about rights held by Government Agencies?
Normally, transfer of any rights to an entity which does not qualify for Small Entity status means that Large Entity fees must be paid. Government agencies are not, themselves, Small Entities. The MPEP says so explicitly in section 509.02 - "Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules ... 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country".
There are certain exceptions to the general rule where some licenses to government agencies by those who themselves qualify as Small Entities will not preclude Small Entity treatment. Those exceptions deal with compulsory licenses granted the government under Executive Order 10096 (inventions by government employees) and 35 USC 202(c) (inventions by private contractors who make inventions while receiving Federal funding, where a license is required as a condition of financing).
If a Federal agency (or any other government body) is an owner of a patent or application (even a co-owner), rather than a licensee, the application/patent would NOT qualify for Small Entity fees.
For details on this, see MPEP 502.09, particularly section VI - RIGHTS HELD BY GOVERNMENT ORGANIZATIONS - http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_02.htm
From http://www.bpmlegal.com/howsmall.html
Wednesday, September 17, 2008
Conclusory Obviousness Statements pt. 2
Claims 26-27.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.
The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.
The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.
Tuesday, September 16, 2008
Conclusory Obviousness Statements
Second, regarding the Examiner’s obviousness argument, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states:
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
Tuesday, September 9, 2008
"Well Known" asserted by Examiner
The Action rejects claim 11 under 35 U.S.C. § 103(a) as allegedly being unpatentable over Cheung in view of what was alleged to be well-known in the networking art. The Action states that “the use of expiration dates for assigned attributes were well-known at the time of the invention.” Applicants disagree, and traverse. Applicants respectfully request that the examiner produce authority for his statement that “the use of expiration dates for assigned attributes were well- known at the time of the invention. “See Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 ("[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings" to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR 1.104(d)(2).” MPEP 2144.03
New Claims
Support for New Claim
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.
Telephonic Interview
Telephonic Interview
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.
Monday, September 8, 2008
Co owned patent Cannot use patent as 103 reference
Lawler, U.S. Patent 5,907,323, Cannot Be Used as a 103 Reference.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.
Tuesday, August 12, 2008
103 Header
Claim Rejections under 35 USC § 103
Claims 1, 2 and 5-12 are rejected under 35 U.S.C. § 103(a) as being anticipated by Apple in view of Berry. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Apple and Berry and further in view of Peach.
Applicant respectfully disagrees, and traverses. To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). "All the words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Claims 1, 2 and 5-12 are rejected under 35 U.S.C. § 103(a) as being anticipated by Apple in view of Berry. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Apple and Berry and further in view of Peach.
Applicant respectfully disagrees, and traverses. To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). "All the words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Refusal to examine -- claim terms unclear
Refusal to Examine.
The Action declines to perform a prior art rejection on these claims as it is alleged that “it is unclear as to where exactly said transformations/operations are stored.” [Action page 5.] The MPEP states that only “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim” is it proper to not “reject such a claim on the basis of prior art.” [Emphasis added.] Moreover “considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims” is required to properly fail to provide a prior art rejection. [MPEP 2173.06, emphasis added.]
Here, the claim terms at issue are common terms explained and pictured in the Specification and Figures as filed. As only when “considerable speculation” is required about the meaning of claim terms, a rejection under 35 U.S.C. 103 is not proper, and as the claim terms at issue are easily understood, expressly pictured, arguably expressly described, and certainly implicitly described, in no way could “considerable speculation” be required to determine the meaning of the claim terms. Applicant thus respectfully requests that the next application not be made final, and that the next Action properly rejects the claims on the basis of prior art or find the claims allowable.
The Action declines to perform a prior art rejection on these claims as it is alleged that “it is unclear as to where exactly said transformations/operations are stored.” [Action page 5.] The MPEP states that only “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim” is it proper to not “reject such a claim on the basis of prior art.” [Emphasis added.] Moreover “considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims” is required to properly fail to provide a prior art rejection. [MPEP 2173.06, emphasis added.]
Here, the claim terms at issue are common terms explained and pictured in the Specification and Figures as filed. As only when “considerable speculation” is required about the meaning of claim terms, a rejection under 35 U.S.C. 103 is not proper, and as the claim terms at issue are easily understood, expressly pictured, arguably expressly described, and certainly implicitly described, in no way could “considerable speculation” be required to determine the meaning of the claim terms. Applicant thus respectfully requests that the next application not be made final, and that the next Action properly rejects the claims on the basis of prior art or find the claims allowable.
112 Rejection All Language Not rejected
Claims 1-11 and 21-26 are rejected under the first paragraph of 35 U.S.C. § 112, as failing to comply with the written description requirement. Specifically, the Action alleges that the Specification does not describe the limitation "having more characters than the restricted character set" and the limitation is unclear to the Examiner. Applicants respectfully disagree with the Office’s reasoning, and believe that the claims in their original format satisfied 35 U.S.C. § 112, but have amended the claims to expedite prosecution.
When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. [MPEP §2163, emphasis added]. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba (in the exact language) requirement. [MPEP § 2163.] Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” [MPEP § 2163.02.] Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae.. [MPEP §§ 2163(I), 2163.02.] Amended claim 1 recites a method to determine and order keyword search terms on a portable electronic device, comprising, e.g.,:
responding to an input sequence associated with a restricted character set having a given number of characters;
mapping the characters of the input sequence to a full character set having more characters than the given number of characters to produce an expanded lookup set; [and]
using the expanded lookup set to search a database of keywords producing keyword results, the keyword results comprising at least one associated keyword;
The amended terms "restricted character set having a given number of characters" and "a full character set having more characters than the given number of characters to produce an expanded lookup set" find support at multiple points through the Application. For example, element 402 of Figure 4 is labeled as "responding to a input sequence using a restricted character set being input" and element 404 is labeled "mapping restricted character set to full character set to produce expanded lookup set." (Emphasis added.) The specification additionally describes a restricted character set being mapped to a fuller character set having more characters than the number of characters in the restricted character set at, for example:
An exemplary embodiment comprises a restricted character set - the numbers 1-0 - mapped onto a full character set, the letters of the alphabet and the original numbers. (Para. 0020)
For example, certain character-based languages such as Chinese have systems where complex characters can be assembled using a series of predefined strokes - this "stroke alphabet" could be the restricted character set. A user may enter the character set using a touch-pad, by pressing a button, by writing on a tablet, by toggling a switch, and so on.
At process block 404 the restricted character set is mapped to a fuller character set. (Paras. 0027, 0028.)
In an alternate embodiment, the transformation maps two roughly equal character sets. In such a case, the English alphabet may be mapped onto the French alphabet, with each English letter (the first character string) transformed into the corresponding set of French letters including those with diacritical marks. So, the "E" would map to "E", "È", "É", and "Ê". (Para. 0055.)
There are also several other points in the specification supporting the above recited language. By way of example, for an embodiment, Para. 0020 describes the restricted character set comprising the numbers 1-0 -- 10 characters; and also describes the full character set as the alphabet, which commonly comprises 26 characters. Those of ordinary skill in the art would understand that such a disclosure clearly discloses mapping the characters of the input sequence to a full character set having more characters than the number of characters (of the restricted set.)
As the above recited amended language is supported by the specification, the §112 rejections of claims 1-11 and 21-26 should be withdrawn. Applicants respectfully request such action.
When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. [MPEP §2163, emphasis added]. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba (in the exact language) requirement. [MPEP § 2163.] Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” [MPEP § 2163.02.] Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae.. [MPEP §§ 2163(I), 2163.02.] Amended claim 1 recites a method to determine and order keyword search terms on a portable electronic device, comprising, e.g.,:
responding to an input sequence associated with a restricted character set having a given number of characters;
mapping the characters of the input sequence to a full character set having more characters than the given number of characters to produce an expanded lookup set; [and]
using the expanded lookup set to search a database of keywords producing keyword results, the keyword results comprising at least one associated keyword;
The amended terms "restricted character set having a given number of characters" and "a full character set having more characters than the given number of characters to produce an expanded lookup set" find support at multiple points through the Application. For example, element 402 of Figure 4 is labeled as "responding to a input sequence using a restricted character set being input" and element 404 is labeled "mapping restricted character set to full character set to produce expanded lookup set." (Emphasis added.) The specification additionally describes a restricted character set being mapped to a fuller character set having more characters than the number of characters in the restricted character set at, for example:
An exemplary embodiment comprises a restricted character set - the numbers 1-0 - mapped onto a full character set, the letters of the alphabet and the original numbers. (Para. 0020)
For example, certain character-based languages such as Chinese have systems where complex characters can be assembled using a series of predefined strokes - this "stroke alphabet" could be the restricted character set. A user may enter the character set using a touch-pad, by pressing a button, by writing on a tablet, by toggling a switch, and so on.
At process block 404 the restricted character set is mapped to a fuller character set. (Paras. 0027, 0028.)
In an alternate embodiment, the transformation maps two roughly equal character sets. In such a case, the English alphabet may be mapped onto the French alphabet, with each English letter (the first character string) transformed into the corresponding set of French letters including those with diacritical marks. So, the "E" would map to "E", "È", "É", and "Ê". (Para. 0055.)
There are also several other points in the specification supporting the above recited language. By way of example, for an embodiment, Para. 0020 describes the restricted character set comprising the numbers 1-0 -- 10 characters; and also describes the full character set as the alphabet, which commonly comprises 26 characters. Those of ordinary skill in the art would understand that such a disclosure clearly discloses mapping the characters of the input sequence to a full character set having more characters than the number of characters (of the restricted set.)
As the above recited amended language is supported by the specification, the §112 rejections of claims 1-11 and 21-26 should be withdrawn. Applicants respectfully request such action.
Friday, August 1, 2008
Examiner Interview Language
Telephonic Interview
Applicant wishes to thank the Examiner for extending a telephonic Examiner Interview on September 1, 2006. Claim 11 and Lindstrom were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s description of Lindstrom.
Applicant wishes to thank the Examiner for extending a telephonic Examiner Interview on September 1, 2006. Claim 11 and Lindstrom were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s description of Lindstrom.
Thursday, July 31, 2008
112 computer readable medium not mentioned in spec
Claims 17-20 have been rejected under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the written description requirement. Specifically, the Action contends that Applicant’s disclosure does not sufficiently describe the limitation of a “computer-readable medium” of amended claims 17-20. This contention is respectfully traversed. Video arrays, various types of ….etc.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.
Examiner misses claim elements, whole claims
Finality of the Next Action Is Precluded
Applicants note the Office Action does not specifically reject the core feature of independent claim 1 . Indeed, although the Summary of the Office Action indicates that claim 1 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates the core feature “via application of the one or more subtractive filters, determining intersection of the associated sets of user interface element definitions as a display set of user interface element definitions….” of this claim. Applicants respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicants. Consequently, a next Office action rejecting claim 1 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).
Applicants note the Office Action does not specifically reject the core feature of independent claim 1 . Indeed, although the Summary of the Office Action indicates that claim 1 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates the core feature “via application of the one or more subtractive filters, determining intersection of the associated sets of user interface element definitions as a display set of user interface element definitions….” of this claim. Applicants respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicants. Consequently, a next Office action rejecting claim 1 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).
Thursday, June 5, 2008
102 enablement-Ref just must be mentioned, even negatively
Summary--102 reference just needs to mention element for it to be an enabling reference.
However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
102 enablement-Ref just must be mentioned
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
CIP apps don't get presumption of priority
PowerOasis v. T-Mobile (Fed. Cir. 2008)
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
http://www.patentlyo.com/patent/2008/04/patentee-has-no.html
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
http://www.patentlyo.com/patent/2008/04/patentee-has-no.html
Computer Readable Medium Claims
From Kyle, 6-4-08
67. (Currently Amended) A computer–readable medium having stored thereon computer program instructions for creating an X , the X comprising:
...; and
the computer-readable medium further having stored thereon computer program instructions comprising:
instructions for a;
instructions for b, and
instructions for c.
67. (Currently Amended) A computer–readable medium having stored thereon computer program instructions for creating an X , the X comprising:
...; and
the computer-readable medium further having stored thereon computer program instructions comprising:
instructions for a;
instructions for b, and
instructions for c.
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